throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 42
`Entered: April 29, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`YAHOO! INC.,
`Petitioner,
`
`v.
`
`CREATEADS LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00200
`Patent 5,535,320
`____________
`
`
`Before MEREDITH C. PETRAVICK, JENNIFER S. BISK, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`I. INTRODUCTION
`A. Background
`On November 27, 2013, Google Inc. and Yahoo! Inc. filed a Petition
`(Paper 1) pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes
`review of claims 1–20 of U.S. Patent No. 5,535,320 (Ex. 1001, “the ’320
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`patent”). A Corrected Petition (Paper 7, “Pet.”) was filed on December 18,
`2013. CreateAds LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 9, “Prelim. Resp.”) to the Corrected Petition on March 17, 2014.
`Pursuant to 35 U.S.C. § 314(a), the Board instituted trial on May 9, 2014, as
`to claims 1–20. Paper 10 (“Institution Decision” or “Dec.”).
`During the trial, Patent Owner timely filed a Patent Owner Response
`(Paper 20, “PO Resp.”), and Petitioner timely filed a Reply to the Patent
`Owner Response (Paper 25, “Reply”). An oral hearing was held on
`February 2, 2015 (Transcript, Paper 41).
`On November 7, 2014, the proceeding was terminated with respect to
`Google Inc. Paper 27. On February 26, 2015, the proceeding was
`terminated with respect to Yahoo! Inc. Paper 40. Although the proceeding
`thus was terminated with respect to all petitioners, the proceeding itself was
`not terminated, and we indicated our intention to proceed to this Final
`Written Decision. Id. at 2.
`We have jurisdiction under 35 U.S.C. § 6(c). This is a Final Written
`Decision under 35 U.S.C. § 318(a) as to the patentability of the challenged
`claims. Based on the record before us, Petitioner has demonstrated by a
`preponderance of the evidence that claims 1–20 are unpatentable.
`
`
`B. Related Proceedings
`The ’320 patent is involved as an asserted patent in the following
`district-court lawsuits between Patent Owner and the original petitioners:
`CreateAds LLC v. Google Inc., Case No. 12-1606-GMS (D. Del.) and
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`CreateAds LLC v. Yahoo! Inc., Case No. 12-1613-GMS (D. Del.). Petitioner
`represents that the ’320 patent is also involved in thirty-three other
`copending lawsuits in the United States District Court for the District of
`Delaware, identified in Exhibit 1004. Pet. 1.
`
`
`C. Grounds of Unpatentability
`Petitioner relies on the following prior-art references.
`Sieber
`US 5,649,216
`July 15, 1997
`(Ex. 1005)
`Sieber PCT WO 92/21097
`Nov. 26, 1992
`(Ex. 1006)
`Powell
`US 4,873,643
`Oct. 10, 1989
`(Ex. 1010)
`
`Amari
`
`Thomas R. Amari, Automating the Design of
`Packaging Families Using PackIT, The Packager’s
`Inferencing Tool, 1–131 (1987) (Ex. 1009)
`
`
`Feiner
`
`Steven Feiner, A Grid-Based Approach to Automating
`Display Layout, Proc. Graph. Int. 1988, 192–97
`(1988) (Ex. 1011)
`
`
`The grounds on which we instituted review are summarized by the
`following chart.
`References
`
`Sieber
`Sieber PCT
`Amari
`Sieber and Amari
`Sieber PCT and Amari
`Sieber and Feiner
`Sieber PCT and Feiner
`
`
`Claim(s) Challenged
`1, 2, 4–8, 10–15, and 17–20
`1, 2, 4–8, 10–15, and 17–20
`1, 2, 4–8, 10–15, and 17–20
`9
`9
`3, 5, 16, and 18
`3, 5, 16, and 18
`
`Basis
`§ 102(e)
`§ 102(b)
`§ 102(b)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
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`
`D. The ’320 Patent
`The ’320 patent, titled “Method of Generating a Visual Design,”
`issued on July 9, 1996, based on Application 08/268,613, filed July 1, 1994,
`and claims priority under 35 U.S.C. § 119(a) to GB 9313761, filed July 2,
`1993. The ’320 patent “relates to a method of generating a visual design for
`[an] application, for example, in the field of advertising, packaging or
`creating corporate images.” Ex. 1001, col. 1, ll. 8–10. The ’320 patent
`describes three databases that contain information used in generating the
`visual design: (1) a first database that stores “visual design elements,”
`described as “typically includ[ing] logos, logotypes, graphics or other
`images, icons and custom wording in predetermined fonts,” id. at col. 2,
`ll. 51–53; (2) a second database that stores required “text elements,”
`described as “typically includ[ing] predetermined words, phrases, and blocks
`of text which may be descriptive or promotional in nature,” id. at col. 2,
`ll. 55–57; and (3) a third database that “stores data relating to predetermined
`design parameters which vary according to the visual design application
`which is selected,” id. at col. 2, ll. 59–61. Examples of “visual design
`applications” provided in the patent “include stationery, livery, signage,
`environmental items or structures, interior and exterior design, packaging,
`promotions and advertising.” Id. at col. 2, ll. 61–64.
`Software uses these databases to generate a visual design, with the
`’320 patent illustrating four basic kinds of calculation through a series of
`flow diagrams: a reading-distance calculation, a scaling calculation, a
`positioning calculation, and an artwork-sizing calculation. Id. at col. 3,
`
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`ll. 55–60. A user may input values for certain parameters, with the software
`applying the calculations to determine values for other parameters used in
`generating the visual design. For example, if a user inputs design
`dimensions, the software may calculate the appropriate reading distance; if a
`user inputs a desired reading distance, the software may calculate overall
`dimensions of the design. Id. at col. 3, ll. 61–67. The various calculations
`result in determining a size and position for visual design elements and/or
`text elements in the visual design. Id. at col. 4, ll. 1–25.
`Claim 1 is illustrative of the challenged claims:
`1. A method of generating a representation of a visual design
`comprising:
`storing data defining a plurality of visual design
`elements;
`storing data defining a plurality of predetermined design
`parameters;
`selecting one of a plurality of predetermined visual
`design applications, wherein each one of said plurality of
`predetermined visual design applications is associated with one
`or more of said plurality of predetermined design parameters;
`selecting at least one visual design element for inclusion in the
`visual design;
`generating a visual design utilizing the selected visual
`design element, the size and position of the element in the
`visual design being determined by the predetermined design
`parameters associated with the selected design application; and
`generating a representation of the visual design.
`
`
`Id. at 45–62.
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`
`II. ANALYSIS
`A. Claim Construction
`The ’320 patent expired on July 1, 2014. See Paper 19, 2. The Board
`interprets claims of an expired patent under principles similar to those used
`during a district court’s review. See In re Rambus, Inc., 694 F.3d 42, 46
`(Fed. Cir. 2012). We are guided by the principle that the words of a claim
`“are generally given their ordinary and customary meaning,” as understood
`by a person of ordinary skill in the art in question at the time of the
`invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
`(en banc). “In determining the meaning of the disputed claim language, we
`look principally to the intrinsic evidence of record, examining the claim
`language itself, the written description, and the prosecution history, if in
`evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d
`1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). There is
`a “heavy presumption,” however, that a claim term carries its ordinary and
`customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
`1366 (Fed. Cir. 2002) (internal citation omitted).
`
`
`1. Claim Terms Previously Construed
`In the Institution Decision, entered before expiration of the ’320
`patent, we construed claim terms as reproduced in the table below, using the
`broadest reasonable construction in light of the specification of the patent in
`which they appear. Dec. 6–11.
`
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`
`Claim Term
`“visual design elements”
`
`“text elements”
`
`“predetermined design
`parameters”
`“storing data defining . . .”
`“predetermined visual design
`applications”
`“livery”
`
`Construction in the Institution Decision
`logos, logotypes, graphics or other images,
`and wording in predetermined fonts each
`provide examples of “visual design
`elements”
`words, phrases, and blocks of text each
`provide examples of “text elements”
`“predetermined parameters that affect the
`appearance of the visual design”
`“recording [specified] information”
`“predetermined implementations for a visual
`design”
`“an emblem, device, and/or distinctive color
`on a vehicle, product, uniform, or other
`clothing, etc., indicating its owner or
`manufacturer”
`
`
`After expiration of the ’320 patent, we reconsidered our initial claim
`construction, concluding that construction under the principles applicable to
`expired patents “does not change our construction.” Paper 19, 3. We have
`reconsidered our construction again in light of further development of the
`parties’ positions during the trial, and conclude that there is no compelling
`reason to modify our constructions of “visual design elements,” “text
`elements,” “predetermined design parameters,” “predetermined visual
`design applications,” or “livery.” See, e.g., Facebook, Inc. v. Pragmatus AV,
`LLC, 582 Fed.Appx. 864, 869 (Fed. Cir. 2014) (nonprecedential) (“The
`broadest reasonable interpretation of a claim term may be the same as or
`broader than the construction of a term under the Phillips standard”)
`(emphasis added).
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`
`“storing data defining . . .”
`Patent Owner contends that, under the Phillips standard, a person of
`ordinary skill in the art would construe each of “storing data defining a
`plurality of visual design elements,” “storing data defining a plurality of
`predetermined design parameters,” and “storing data defining a plurality of
`text elements” as requiring organization of the recited data in a database.
`PO Resp. 8–10, 12–14, 16–17. Patent Owner directs our attention to
`Fotomedia Techs, LLC v. AOL, LLC, Civil Action Nos. 2:07-cv-255 and
`2:07-cv-256, 2009 WL 2175845, at *16 (E.D. Tex. July 21, 2009), as
`standing for the proposition that the claim term “storing” should be
`construed to require database storage “when the specification expressly, and
`solely, describes storage in a database.” See id. at 9–10. Patent Owner
`observes that the specification of the ’320 patent “repeatedly and
`consistently states that the visual design elements are stored in a database.”
`Id. at 9; see id. at 13 (similar observation for storage of predetermined
`design parameters), 16 (similar observation for storage of text elements).
`Petitioner does not address the reasoning of the District Court Magistrate
`Judge in Fotomedia in its Reply.
`Patent Owner also supports its proposed construction with testimony
`by Craig E. Wills, Ph.D.,1 who attests that
`a person of ordinary skill in the art in 1993 would have
`understood . . . that for visual design elements to be selected
`from a storage medium for inclusion in a visual design
`
`1 As discussed infra, we deny Petitioner’s motion to exclude the testimony
`of Dr. Wills.
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`
`application, one would have understood that the claimed visual
`design elements must be organized and stored in a database to
`be made available for selection.
`
`
`Ex. 2000 ¶ 19; see id. ¶ 22 (similar opinion for storage of predetermined
`design parameters), ¶ 25 (similar opinion for storage of text elements).
`Notably, the claims recite “storing” the various forms of data in combination
`with selection of at least one of the respective data. Although Petitioner
`challenges Patent Owner’s proposed construction, it appears not to have
`cross-examined Dr. Wills to explore further the basis for his opinion. See
`Reply 2–4. Petitioner also does not direct us to any disclosure in the
`specification of any other way of storing the recited forms of data.
`We are persuaded that, under the construction afforded claims of an
`expired patent, the reasoning of Fotomedia is applicable and the claimed
`combination of selection of at least one of the respective data with “storing”
`the different forms of data supports a construction of “storing data defining
`. . .” as requiring storage in a database. But to the extent that Patent Owner’s
`proposed constructions demand different databases for the different forms of
`data, we disagree. Although the specification of the ’320 patent makes
`reference to “first,” “second,” and “third” databases (see, e.g., Ex. 1001, col.
`2, ll. 53–61), Patent Owner has not identified sufficient rationale for
`incorporating such a distinction into the claims. “Although the claims are
`interpreted in light of the specification, limitations from the specification are
`not read into the claims.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
`1993).
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`
`We also disagree with Patent Owner’s contentions that (1) the “data
`defining” a “visual design element” must include its height and width; and
`(2) the “data defining” a “plurality of predetermined design parameters”
`must include parameters identifying size and position of the elements in a
`visual design. Both of these contentions improperly attempt to import
`limitations from the specification by imposing constraints on data storage
`that are neither recited explicitly in the claims nor demanded by the
`relationship with other elements recited in the claims.
`Accordingly, we construe “storing data defining . . .” as “recording, in
`a database, information defining . . . .”
`
`
`2. “entering data corresponding to a
`permitted range of variables in the selected design application”
`
`Each of claims 4 and 17 recites “entering data corresponding to a
`permitted range of variables in the selected design application.” Patent
`Owner proposes that this limitation be construed as “entering a value within
`a predetermined range of values associated with the selected design
`application.” PO Resp. 17–18. Patent Owner reasons that one of ordinary
`skill in the art would understand that a “permitted” range must be
`determined in advance of entering a value within the range, and supports its
`reasoning with testimony by Dr. Wills. Id. at 18 (citing Ex. 2000 ¶ 26).
`Patent Owner also observes that the abstract of the ’320 patent explains that
`“[t]hese parameters, together with user-entered variables within a
`predetermined range adjust the relative size of each element and the
`
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`juxtaposition in the elements in the final design.” Id. (citing Ex. 1001,
`Abst.).
`Petitioner disagrees with Patent Owner’s proposed construction,
`contending that “range of variables” would have been understood by one of
`ordinary skill in the art to mean a “list of variables,” not “the values of the
`variables,” supporting its proposal with testimony by Dr. Arthur M. Keller.
`Reply 4–5 (citing Ex. 1023 ¶¶ 23–25). Petitioner contends that its proposed
`construction is supported by the specification of the ’320 patent by
`describing several variables. Id. at 5.
`We find that Petitioner’s proposed construction requires a less natural
`reading of the limitation, particularly in light of the language identified by
`Patent Owner in the patent’s abstract. In addition, Dr. Keller acknowledged
`at his deposition that “there are two alternative interpretations of the phrase
`‘corresponding to a permitted range of variables,’” including the one
`advanced by Patent Owner. Ex. 1022, 68:23–69:8.
`We construe the limitation as proposed by Patent Owner, i.e., as
`“entering a value within a predetermined range of values associated with the
`selected design application.”
`
`
`B. Petitioner’s Motion to Exclude
`Petitioner moves to exclude the declaration testimony of Patent
`Owner’s witness, Dr. Wills (Ex. 2000). Paper 30. Petitioner contends that
`Patent Owner has not qualified Dr. Wills as an expert and that his
`declaration is conclusory in nature because he fails to state what materials he
`
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`considered and what methodology he used in creating his declaration. Id. at
`1. Petitioner timely objected to Dr. Wills’s declaration. Ex. 1024.
`“A witness who is qualified as an expert by knowledge, skill,
`experience, training, or education may testify in the form of an opinion or
`otherwise if” certain conditions are met. Fed. R. Evid. 702. Although
`Patent Owner did not provide a copy of Dr. Wills’s curriculum vitae (Ex.
`2003) with his declaration, the summary description of Dr. Wills’s education
`and experience in the declaration itself qualifies him as an expert on the
`issues addressed in his declaration. Dr. Wills declares under penalty of
`perjury that he holds baccalaureate and advanced degrees in computer
`science and has taught courses on “User Interface Design, in which visual
`design was one of the topics of the course.” Ex. 2000 ¶¶ 1–4.
`In considering whether Dr. Wills’s opinions are deficient for failing to
`articulate sufficiently what materials he considered and what methodology
`he sued, we observe that his declaration is limited in scope. It provides
`some background description of the technology at issue (id. ¶¶ 6–10), a brief
`overview of the ’320 patent (id. ¶¶ 11–12), an evaluation of the level of
`ordinary skill in the art (id. ¶¶ 13–16), and an expression of his opinion of
`how a person of ordinary skill in the art would understand certain terms
`appearing in the claims (id. ¶¶ 17–30). This information is helpful in
`developing appropriate claim constructions and requires no unusual or
`elaborate methodology. Notably, Dr. Wills does not testify to any opinion
`whether the claim elements are taught or suggested by any of the prior art
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`applied in any of the grounds upon which we instituted this inter partes
`review.
`For these reasons, we decline to exclude the testimony of Dr. Wills.
`
`
`C. Anticipation of Claims 1, 2, 4–8, 10–15, and 17–20
`by Sieber and Sieber PCT
`
`Sieber and Sieber PCT both developed from the same original
`application filed in the United States and share much of the same
`specification. They “relate[] to electronic publishing, and more particularly,
`to a system for automatically generating the page layout of a printed
`document from use-defined text and graphic elements.” Ex. 1005, col. 1, ll.
`16–19; Ex. 1006, 2.2 Petitioner contends that claims 1, 2, 4–8, 10–15, and
`17–20 are anticipated by Sieber and are anticipated by Sieber PCT. Pet. 11–
`28.
`
`Figure 2 of Sieber and Sieber PCT is reproduced below.
`
`
`
`
`2 Exhibit 1006 has two sets of pagination, the original pagination of the
`reference and pagination added by Petitioner. We cite to the original
`pagination of the reference.
`
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`Figure 2 illustrates an example of a document to which Sieber and Sieber
`PCT may be applied, in the form of a business card. Ex. 1005, col. 5, ll. 3–
`6; Ex. 1006, 8. A database of page specifications is stored, with each page
`specification generically describing the page layout of the document. Ex.
`1005, col. 4, ll. 61–65; Ex. 1006, 8. The page layout corresponding to the
`example of Figure 2 includes (1) graphic element G1, which is “represented
`by a data structure . . . having the user-definable attributes of location, size,
`and actual graphic data,” Ex. 1005, col. 5, ll. 21–23, Ex. 1006, 9; and (2) text
`elements T1–T6, which are represented by data structures that “have the
`user-definable attributes of font style, character string, size, and location,”
`Ex. 1005, col. 5, ll. 17–20; Ex. 1006, 9. Other data structures define
`unchangeable aspects of the page, and various constraints comprised by the
`page specifications “describe various aspects of page 28 as well as the size
`and placement of the text and graphic elements of document 30 and their
`relationship to each other and to page 28.” Ex. 1005, col. 5, ll. 23–29; Ex.
`1006, 9.
`The principal difference between Sieber and Sieber PCT is the
`disclosure of a second embodiment in Sieber, shown in Figures 5–8 and
`described at column 8, line 41 – column 11, line 38, that does not appear in
`Sieber PCT. Figure 6 of Sieber is reproduced below.
`
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`Figure 6 illustrates a second example of a document to which Sieber may be
`applied (but which does not appear in Sieber PCT), in the form of a greeting
`card. Ex. 1005, col. 9, ll. 3–5. Sieber describes an artwork specification:
`[A]rtwork specification 118 comprises a plurality of data
`structures representing the graphic elements of the artwork, as
`well as a plurality of constraints that dictate the relationships of
`the graphic elements to one another as well as to any text
`elements or other elements that might be incorporated into
`greeting card 120 . . . . The significant feature is that each
`artwork specification 118 describes how the other elements,
`such as text or graphic elements should interact with the
`placement of the artwork on the greeting card.
`
`Ex. 1005, col. 9, ll. 10–46.
`Graphic element G1 of Figure 2 and artwork A1 and A2 of Figure 6
`are “visual design elements” as we have construed the term. Text elements
`T1–T6 of Figure 2 and the text that may be placed within area T1 of
`
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`Figure 6 are “text elements” as we have construed the term. The constraints
`on size and placement of text and graphic elements described separately for
`the first embodiment (see Ex. 1005, col. 5, ll. 23–29 and Ex. 1006, 9) and for
`the second embodiment (see Ex. 1005, col. 9, ll. 10–48) disclose
`“predetermined designed parameters” as we have construed the term. In
`addition, each of the business-card and greeting-card applications are
`stationery implementations for the visual design that correspond to
`“predetermined visual design applications” as we have construed the term.
`We have reviewed the evidence presented by Petitioner, including the
`claim charts in the Petition (Pet. 13–28) and the Declarations of Dr. Keller
`(Exs. 1012, 1023). Notwithstanding Patent Owner’s arguments, we are
`persuaded that Petitioner has proved by a preponderance of the evidence that
`Sieber and Sieber PCT each anticipate claims 1, 2, 4–8, 10–15, and 17–20.
`We address specific arguments below.
`
`
`1. “selecting one of a plurality of
`predetermined visual design applications”
`
`Patent Owner contends that neither Sieber nor Sieber PCT discloses
`“selecting one of a plurality of predetermined visual design applications”
`(emphasis added), as recited in independent claims 1 and 14, because Sieber
`and Sieber PCT “are limited to a single implementation – stationery.” PO
`Resp. 24–27. This contention introduces a further level of abstraction absent
`from our construction of “predetermined visual design applications” as
`“predetermined implementations for a visual design.” Nothing in our
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`construction precludes multiple stationery implementations from
`corresponding to “a plurality of predetermined visual design applications.”
`Indeed, Petitioner identifies passages in the specification of the ’320 patent
`inconsistent with Patent Owner’s position:
`[I]n describing the purported problem to be solved, the
`specification notes that confusion or brand dilution may arise
`when “a particular trade mark may be applied to a number of
`different products, with a number of different forms of
`packaging, as well as being applied in advertising, signage, and
`on letterheads.” These passages teach that visual design
`“applications” may exist within a single subject matter category
`(e.g., “packaging”), and may also span multiple subject matter
`categories (e.g., “packaging,” “advertising,” “signage,” and
`“letterheads.”) In addition, the fact that a given “application”
`may fall within two or more subject matter categories—e.g., a
`product package may be “packaging,” “promotions,” and
`“advertising”—further confirms that the ’320 patent does not
`contemplate a hard division between subject matter categories.
`
`Reply 7 (citing Ex. 1001, col. 1, ll. 15–18 (emphases by Petitioner)) (other
`citations omitted). Petitioner also supports its opposition to Patent Owner’s
`introduction of a higher level of abstraction in discussing “subject matter
`categories” with declaration testimony by Dr. Keller. Ex. 1023 ¶ 30.
`Sieber and Sieber PCT disclose a “database [that] may contain
`numerous page specifications.” Ex. 1005, col. 6, l. 19; Ex. 1006, 11. Each
`such page specification “comprises a plurality of data structures representing
`the text and graphic elements of [a] document 30.” Ex. 1005, col. 5, ll. 12–
`14; Ex. 1006, 9. We find that the disclosure of such multiple page
`specifications discloses “a plurality of predetermined visual design
`
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`applications.” In addition, we find that Sieber and Sieber PCT’s disclosure
`of “user interface subroutines which allow the user to select one of the page
`specifications in [the] database 25” (Ex. 1005, col. 6, ll. 35–37; Ex. 1006,
`12) discloses “selecting one of a plurality of predetermined visual design
`applications.”
`
`2. “entering data corresponding to a permitted range of variables
`in the selected design application”
`
`Each of dependent claims 4 and 17 recites “entering data
`corresponding to a permitted range of variables in the selected design
`application,” which we construe as “entering a value within a predetermined
`range of values associated with the selected design application.” Patent
`Owner contends that Petitioner’s identification of entering page dimensions,
`aspect ratios, text, font styles, locations and sizes of elements is insufficient
`to demonstrate that the limitation is disclosed by Sieber or Sieber PCT
`because “[s]imply entering information . . . does not indicate that there is a
`‘permitted range.’” PO Resp. 29.
`Patent Owner identifies aspect ratio as a choice “which may be
`limited.” Id. Sieber and Sieber PCT disclose that, in some instances, “the
`user will be prompted to enter the desired dimensions of the page 28, as well
`as the desired aspect ratio, i.e., portrait or landscape format, if applicable.”
`Ex. 1005, col. 7, ll. 56–58; Ex. 1006, 15. Patent Owner’s argument that
`“there is no indication from these vague statements as to whether Sieber
`provides a predetermined range of values or whether it is limited to a single
`
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`

`IPR2014-00200
`Patent 5,535,320
`
`value” does not impugn that the states of “portrait” and “landscape” define a
`“predetermined range of values.” See PO Resp. 30. Rather, Patent Owner
`suggests that Sieber and Sieber PCT’s assertion that prompting the user to
`enter a desired aspect ratio “if applicable” does not rule out possibilities
`when no such choice is afforded to the user. See id. This is unpersuasive.
`Sieber and Sieber PCT clearly contemplate circumstances in which the user
`enters a value (“portrait” or “landscape”) within a predetermined range of
`values (“portrait” and “landscape”) associated with the selected design
`application.
`We also note that Dr. Keller opines that Sieber and Sieber PCT’s
`disclosure of design constraints effectively imposes limits on the variables
`for which a user is prompted to enter values. See Ex. 1023 ¶ 41. Patent
`Owner does not identify adequately controverting evidence. Petitioner’s
`argument that the Petition’s identification of “page dimensions, object
`locations, previously stored graphics, and font options as other variables in
`Sieber and Sieber PCT, for which the user can enter data corresponding to
`each variable” (Reply 11) thus is supported by sufficient evidence.
`
`
`3. “text elements include predetermined words,
`phrases, and blocks of text”
`
`Claim 6 recites that “the text elements include predetermined words,
`phrases and blocks of text.” Patent Owner contends that this limitation is
`not directed to nonfunctional descriptive material and that it is not disclosed
`by Sieber or Sieber PCT. PO Resp. 31–34. We need not decide the former
`
`19
`
`

`

`IPR2014-00200
`Patent 5,535,320
`
`contention because we are persuaded by Petitioner that the limitation, in any
`event, is disclosed by Sieber and Sieber PCT.
`Petitioner identifies Sieber and Sieber PCT’s disclosure of storing
`“user-defined character strings,” and Sieber PCT’s disclosure of a database
`that “contains a plurality of pre-written message texts that are not associated
`with any particular type of artwork,” examples of which include generic
`holiday greetings and famous quotations. Pet. 20 (citing Ex. 1005, col. 10,
`ll. 15–29); see Ex. 1006, 5. Patent Owner’s contention that “‘user-defined
`character strings’ are not ‘predetermined’” because they are determined at
`the instant the user creates them is not persuasive. See PO Resp. 33.
`Although they may be “determined” in the first instance at that time, Sieber
`and Sieber PCT teach storing them so that their subsequent use thereafter is
`“predetermined.” See Ex. 1005, col. 3, ll. 7–8; Ex. 1006, 5. And Patent
`Owner’s argument that “the Petition does not specify which, if any, of the
`joke, holiday greeting or famous quotation anticipate the ‘predetermined
`words, phrases and blocks of text’ limitation” is also unpersuasive because
`each of those message texts includes predetermined words, phrases, and
`blocks of text. See PO Resp. 33–34.
`
`
`4. “visual design elements include . . .
`wording in predetermined fonts”
`
`Claims 7 and 8 recite that “the visual design elements include logos,
`logotypes, graphics or other images, and wording in predetermined fonts.”
`The Petition identifies a graphic element “such as a corporate logo or other
`
`20
`
`

`

`IPR2014-00200
`Patent 5,535,320
`
`symbols associated with the card holder’s business or trade” as a visual
`design element that includes wording in predetermined fonts. Pet. 20–21
`(citing Ex. 1005, col. 5, ll. 45–48; Ex. 1006, 10). We disagree with Patent
`Owner’s assertion that “[t]he Petition does not state or suggest that the
`corporate logo or symbol for the graphic element G1 is ‘wording in
`predetermined fonts.’” PO Resp. 35. The Petition includes a chart to
`illustrate that “[e]ach and every element of claims 1-20 is disclosed in each
`of Sieber and Sieber PCT” (Pet. 13), with the text of claim 7 reproduced
`beside the disclosure of Sieber and Sieber PCT describing a corporate logo
`or other symbol as an example of graphic element G1. We determine that
`the cited portions of the references adequately disclose what Patent Owner
`contends is absent from the Petition.
`
`5. “each of the plurality of predetermined visual design applications
`has its own predetermined design parameters, which are related to the
`predetermined design parameters of one or more of the other visual design
`applications”
`
`Claims 10 and 19 each recite that “the plurality of predetermined
`visual design applications has its own predetermined design parameters,
`which are related to the predetermined design parameters of one or more of
`the other visual design applications.” In considering this limitation, we note
`that “related” is a broad term that may be satisfied in a variety of different
`ways. Although Patent Owner contends that it is “unclear” how the portions
`of Sieber and Sieber PCT cited by Petitioner meet the limitation (PO Resp.
`
`21
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`

`IPR2014-00200
`Patent 5,535,320
`
`36–37), Petitioner’s observation that page specifications contain common
`elements is sufficient to show relatedness. See Pet. 22, 27–28; Reply 14.
`
`
`6. Summary
`Based on our consideration of the evidence presented by Petitioner
`and the arguments detailed above, we are persuaded that Petitioner has
`proved by a preponderance of the evidence that claims 1, 2, 4–8, 10–15, and
`17–20 are anticipated by

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